FIDO ALLIANCE SPECIFICATION TRADEMARK LICENSE … · 2019-11-16 · FIDO Alliance Trademark License...

FIDO Alliance Trademark License Agreement Approved: September 18, 2018

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FIDO ALLIANCE SPECIFICATION

TRADEMARK LICENSE AGREEMENT

This Trademark License Agreement (“License Agreement”) is made and entered

into as of the Effective Date described below by and between FIDO Alliance

(“FIDO”), a California Corporation, and ___________________________________,

a __________________ corporation with its principal place of business at

____________________________________________________ (“COMPANY”).

RECITALS

WHEREAS, FIDO is developing various specifications for user authentication

protocols and wishes to foster the adoption of these specifications;

WHEREAS, FIDO owns various trademarks identifying FIDO; and

WHEREAS, COMPANY wishes to provide products and services which conform

to the various specifications and wishes to promote such products and services as

being associated with the FIDO specifications;

NOW THEREFORE:

The parties hereby agree as follows:

1) DEFINITIONS

For purposes of this License Agreement the following terms shall have the

following meanings:

a) “Effective Date” shall be the date of execution of this License Agreement by

FIDO.

b) “FIDO Certification Test Procedure” shall mean the applicable FIDO

product testing and compliance requirements as set forth and as may be

amended by FIDO from time to time with reasonable notice.

c) “Implementation” shall mean a specific model or version of COMPANY’s

implementation of a FIDO specification, a representative sample of which

has been submitted to FIDO and has passed the FIDO Certification Test


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Procedure. The specific model or version referenced here is based on the

underlying code and/or hardware itself, not any marks or version numbers

publicly used with the Implementation. Thus, if the mark or version

number changes, but the underlying code and/or hardware does not

materially change, it is the same Implementation. If the underlying code

and/or hardware does materially change, such as by addition of a module,

even though the mark or version number may not change, it is a new

Implementation. The Implementation may be a product on its own or may

be a component incorporated into a product without material modification

to the component, whether provided as a product or used to provide a

service. Thus, if an Implementation is marketed by a second company

under a different mark, but the underlying code and/or hardware is not

materially modified, it is still treated as the same Implementation.

d) “Marks” shall mean the marks as set forth in Exhibit A, including FIDO, the

FIDO logo, FIDO Alliance and the FIDO ALLIANCE Logo and

combinations formed with Snap-ons and Modifier Words. Exhibit A may

be reasonably amended by FIDO from time to time with reasonable notice

to better reflect FIDO’s marks.

e) “Related Companies” of COMPANY shall mean a corporation, company or

other entity that, now or hereafter, directly or indirectly controls, is

controlled by or is under common control with COMPANY, but such

corporation, company or other entity shall be deemed to be a Related

Company only so long as such control exists. For purposes of this definition

"control" means direct or indirect ownership of or the legal right to exercise:

(i) more than fifty percent (50%) of the outstanding shares or

securities (representing the right to vote for election of directors or

other managing authority); or

(ii) in the case of a corporation, company or other entity which does

not have outstanding shares or securities, as may be the case in a

partnership, joint venture or unincorporated association, more than

fifty percent (50%) of the ownership interest representing the right

to make the decisions for such corporation, company or other entity.


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f) “Sponsored Event” shall mean an event sponsored by FIDO in which

parties perform testing in an effort to determine if a party’s product meets

certification criteria as specified by FIDO.

g) “Territory,” subject to Section 2(e), shall be worldwide.

2) LICENSE GRANT

a) Subject to and expressly conditioned upon compliance with the terms and

conditions of this License Agreement, FIDO hereby grants to COMPANY,

and any applicable Related Companies of COMPANY, a nonexclusive,

personal right (including through manufacturing and distribution agents

or contractors of COMPANY and Related Companies) to use in the

Territory, solely in the manner described in the FIDO Usage Guidelines set

forth in the attached Exhibit B and as may be reasonably amended by FIDO

from time to time with reasonable notice, the Marks on and in connection

with the Implementation.

b) COMPANY hereby ensures its Related Companies’ compliance with the

terms and conditions of this License Agreement. COMPANY agrees that it

shall be jointly and severally liable for any breach of the terms and

conditions of this License Agreement by such parties.

c) FIDO represents and warrants that to the best of its knowledge it owns the

names and marks FIDO and FIDO ALLIANCE and the Marks and has the

right to enter into this License Agreement, including the right to license the

Marks. FIDO further represents and warrants that in its reasonable

business judgment it will maintain and enforce the validity and its

ownership of the Marks in the Territory.

d) FIDO may modify the license right set forth in Section 2(a) above to

eliminate any country or jurisdiction from this License Agreement if FIDO

determines, in its reasonable judgment, that use or continued use of the

Marks in such country or jurisdiction may subject FIDO or any third party

to legal liability, or may jeopardize FIDO’s rights in the Marks or any other

FIDO trademarks in that or any other country of jurisdiction. In such event,

and upon notice from FIDO, COMPANY shall with reasonable promptness

cease all use of the Marks in such country or jurisdiction.


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e) COMPANY shall use the Marks in a manner consistent with the FIDO

Alliance Usage Guidelines set forth in attached Exhibit B, as amended by

FIDO from time to time with reasonable notice.

f) COMPANY agrees and acknowledges that FIDO retains all right, title and

interest in and to the names and marks FIDO and FIDO ALLIANCE and

the Marks. Except as expressly granted in this License Agreement,

COMPANY shall have no rights in the Marks or the underlying FIDO or

FIDO ALLIANCE marks. Under no circumstances will anything in this

License Agreement be construed as granting, by implication, estoppel or

otherwise, a license to any technology or proprietary right of FIDO or any

member thereof other than the permitted use of the Marks pursuant to

Section 2(a).

g) COMPANY represents and warrants that it will use the Marks solely as

provided in this License Agreement and will not use the Marks on goods,

products, materials or services which, in FIDO’s reasonable judgment and

with reasonable notice to COMPANY, will diminish or otherwise damage

FIDO’s goodwill in the Marks, including but not limited to uses which

FIDO considers to be obscene, pornographic, or otherwise in poor taste or

unlawful, or which purpose or objective is to encourage third parties to

participate in unlawful activities.

3) SPECIFICATION STATUS

a) COMPANY acknowledges that the relevant specification may not have

reached Implementation Draft status. COMPANY acknowledges that

certification procedures may be for Review Draft versions or

Implementation Draft versions of the relevant specification. The Draft

status of the relevant specification may determine which of the Marks can

be used with the Implementation.

b) COMPANY acknowledges that until the specification reaches at least

Implementation Draft status, COMPANY is not the recipient of the

Promise of Section 6.2.1.1 of the FIDO Membership Agreement. As such,

COMPANY acknowledges that the indemnity of Section 8(d) will include,

for example, patent infringement allegations, assertions and litigation.


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4) FURTHER CONVEYANCES

The license grant in Section 2(a) is personal to COMPANY, and COMPANY,

except as expressly provided in this License Agreement or otherwise permitted

by FIDO in writing, shall not assign, transfer or sublicense this License

Agreement (or any right or obligation granted herein) in any manner without

the prior written consent of FIDO. Notwithstanding the foregoing, where

COMPANY transfers to a third party all or a majority share of all of the

business of COMPANY, that assignee shall be entitled to use the Marks under

the terms of this version of this License Agreement upon execution of same.

5) LOGO ADMINISTRATION FEE

Logo administration fees are set forth in a separate Schedule of TMLA Fees,

which may be amended from time to time by FIDO.

6) QUALITY, INSPECTION, AND APPROVAL

a) COMPANY represents and warrants that to the best of its knowledge the

licensed Implementation is in full compliance with the relevant FIDO

specifications, and COMPANY agrees to maintain the quality of the

licensed products or services at least at a level that meets industry

standards and is commensurate with the quality of the representative

application materials submitted to and/or approved by FIDO.

b) COMPANY shall supply FIDO with suitable specimens of COMPANY’s

use of the Marks in connection with the licensed Implementation at any

time upon at least thirty (30) days prior written notice from FIDO.

COMPANY shall reasonably cooperate with FIDO to facilitate periodic

review of COMPANY’s use of the Marks and of COMPANY’s continuing

compliance with relevant FIDO standards and procedures.

c) If FIDO, in its sole discretion, determines that any use of the Marks or that

the quality of the licensed Implementation fails to conform to this License

Agreement, FIDO shall provide COMPANY with written notice of such

failure or deficiency. The COMPANY shall have sixty (60) days thereafter

to satisfy FIDO that the COMPANY has fully corrected and remedied any

such deficiencies. Should the COMPANY fail to cure the deficiencies

within said sixty (60) day period, FIDO may terminate this License

Agreement with respect to such deficient Products or Services.


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d) COMPANY represents and warrants that it will comply with all applicable

laws, rules, and regulations regarding promotion and sale of licensed

Products or Services with any use of the Marks, and will not knowingly

violate or infringe any right of any third party in connection with the

promotion and sale of licensed Products or Services with any use of the

Marks.

7) IDENTIFICATION AND USE

a) COMPANY shall use commercially reasonable efforts to mark all manuals

and marketing collateral, and programs, screens and packaging, where

space permits, that use the Marks with a trademark footnote similar to that

set forth in Exhibit A(b) and shall otherwise comply with the FIDO Alliance

Usage Guidelines (Exhibit B) as amended by FIDO from time to time with

reasonable notice.

b) COMPANY acknowledges FIDO’s ownership of the names and marks

FIDO and FIDO ALLIANCE and of the various related marks, including

the Marks. COMPANY shall employ commercially reasonable efforts to

use the Marks in a manner that does not derogate from FIDO’s rights in the

Marks and will take no action that will interfere with or diminish FIDO’s

rights in the Marks. During the Term, notwithstanding Section 19,

COMPANY shall not adopt, use or register any corporate name, trade

name, trademark, domain name, product name, service mark or

certification mark, or other designation the same as or substantially similar

to the Marks. All use of the Marks by COMPANY will inure to the benefit

of FIDO. COMPANY may not use the Marks in any way that implies

endorsement or sponsorship by FIDO of COMPANY’s products or services

other than the licensed Products or Services.

8) DEFENSE OF CLAIMS

a) In the event FIDO receives information concerning an intellectual property

infringement claim related to the Marks, FIDO shall notify COMPANY in

writing of such information and may at its expense, without obligation to

do so, either (i) procure for COMPANY the right to continue to use the

alleged infringing Marks as set forth in Section 2(a), or (ii) replace or modify

the Marks to make it non-infringing, and in which case, COMPANY shall

with reasonable promptness thereafter, but in no case less than ninety (90)


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days from the date of FIDO’s written notification of the intellectual

property infringement claim, cease use of the alleged infringing Marks.

b) FIDO shall have no liability for any intellectual property infringement claim

based on COMPANY’s products or services, or its use of the names and

marks FIDO and FIDO ALLIANCE or the Marks.

c) EXCEPT FOR FIDO’S EXPRESS REPRESENTATIONS AND

WARRANTIES MADE HEREIN, FIDO MAKE NO WARRANTIES EITHER

EXPRESS, IMPLIED, STATUTORY OR OTHERWISE WITH RESPECT TO

THE MARKS, INCLUDING ANY WARRANTY OF NON-

INFRINGEMENT, IMPLIED WARRANTIES OF MERCHANTABILITY OR

FITNESS FOR A PARTICULAR PURPOSE.

d) COMPANY agrees to indemnify and defend FIDO from and against any

and all third party claims, damages, costs and expenses (including

reasonable attorneys’ fees) and pay the amount of any adverse final

judgment (or settlement to which both parties consent) to the extent arising

out of or directly related to the use of the Marks in connection with

COMPANY’s Licensed Products or Services in any manner, including user

claims regarding the COMPANY’s licensed Products or Services’ defect,

failure or malfunction, provided COMPANY is notified promptly in

writing of any claim, and COMPANY has sole control over the defense or

settlement of such claims.

9) CONSEQUENTIAL, ET AL. DAMAGES

NEITHER PARTY SHALL BE LIABLE FOR ANY CONSEQUENTIAL,

INCIDENTAL, INDIRECT, PUNITIVE OR SPECIAL DAMAGES

(INCLUDING LOSS OF BUSINESS PROFITS) ARISING FROM OR

RELATED TO COMPANY’S MARKETING, PROVISION, USE OR

DISTRIBUTION OF LICENSED IMPLEMENTATIONS, OR ANY USE OF

THE MARKS, REGARDLESS OF WHETHER SUCH LIABILITY IS BASED

ON BREACH OF CONTRACT, TORT, STRICT LIABILITY, BREACH OF

WARRANTIES, INFRINGEMENT OF INTELLECTUAL PROPERTY,

FAILURE OF ESSENTIAL PURPOSE OR OTHERWISE, EVEN IF

ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. IN NO EVENT

SHALL FIDO BE LIABLE FOR ANY DAMAGES FOR COMPANY’S USE

OF THE MARKS IN VIOLATION OF THE TERMS AND CONDITIONS OF

THIS LICENSE AGREEMENT.


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10) INFRINGEMENT

COMPANY shall promptly notify FIDO of any suspected infringement of

or challenge to the Marks. COMPANY shall further promptly notify FIDO

of any claims by third parties of infringement of the Marks.

11) TERM OF LICENSE AGREEMENT

a) The term of this License Agreement shall be for a period of one (1) year from

the Effective Date; provided however, that either party shall have the right

to terminate this License Agreement with cause upon thirty (30) days’ prior

written notice.

b) Upon the termination of the current term of this License Agreement, this

License Agreement will automatically extend for another one (1) year term,

subject to licensed Implementations being fully compliant with the then-

current relevant specification, unless terminated by either party at least

thirty (30) days prior to the expiration of the then-current term.

c) From and after termination of this License Agreement, COMPANY shall

cease and desist from all use of the Marks. However, unless this License

Agreement is terminated for breach in connection with more than a single

Implementation, COMPANY may distribute then-existing inventory of

complying Implementations and advertising materials containing the

Marks until all such inventory is exhausted, provided use of the Marks in

connection with such inventory and such inventory is in compliance with

the terms and conditions of this License Agreement.

12) NOTICES

All notices and other communications under this License Agreement shall

be in writing and shall be deemed given if delivered personally, mailed by

registered or certified mail, return receipt requested, or sent by email or

telecopy with a receipt confirmed by telephone, to the parties at the

addresses herein or to such other addresses as a party may from time to

time notify the other parties. Provision of an email address at which each

party may be contacted is mandatory.


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FIDO Alliance

c/o COO/CFO

401 Edgewater Place, Suite 600

Wakefield, MA 01880

Telephone: +1 408-657-3436

Fax: +1 408-904-4484

Email: [email protected]

COMPANY: Information listed at the end of this License Agreement

13) ENTIRE LICENSE AGREEMENT; AMENDMENT

FIDO providing this License Agreement to COMPANY does not constitute

an offer by FIDO. Upon execution by both FIDO and COMPANY, this

License Agreement, including all Exhibits, contains the entire agreement of

the parties with respect to the subject matter hereof, and shall superseded

and merge all prior and contemporaneous communications. It shall not be

amended except by written agreement subsequent to the Effective Date and

signed on behalf of the parties by their respective authorized

representatives except that FIDO may unilaterally amend Exhibits A and B

from time to time on reasonable notice.

14) GOVERNING LAW; ATTORNEYS’ FEES; EQUITABLE RELIEF

a) This License Agreement shall be governed by and construed in accordance

with the laws of the State of California and applicable federal laws.

COMPANY hereby consents to jurisdiction and venue in the state and

federal courts sitting in the State of California, in the city of San Jose. The

parties agree to accept service of process by U.S. certified or registered mail,

return receipt requested, or by any other method authorized by applicable

law.

b) If either party employs attorneys to enforce any rights arising out of or

related to the breach of this License Agreement, the prevailing party shall

be entitled to recover its reasonable attorneys’ fees, costs, and other

expenses.

c) COMPANY acknowledges that a breach by it of this License Agreement

may cause FIDO irreparable damage that cannot be remedied in monetary


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damages in an action at law, and may also constitute infringement of the

Marks. In the event of any breach by COMPANY that could cause

irreparable harm to FIDO, or cause some impairment or dilution of its

reputation or trademarks, FIDO shall notify COMPANY of such breach and

allow COMPANY ten (10) business days after actual receipt of such notice

to respond. COMPANY and FIDO will then attempt in good faith to

resolve the breach in a manner satisfactory to COMPANY and FIDO. If

COMPANY fails to respond to FIDO with a reasonable attempt to resolve

the breach within such response period or if the parties’ good faith attempts

to resolve the breach fail, FIDO shall be entitled to an immediate injunction

and to seek any other legal or equitable remedies.

15) HEADINGS

Section headings are used in this License Agreement for convenience of

reference only and shall not affect the meaning of any provision of this

License Agreement.

16) WAIVER

No waiver of any breach of any provision of this License Agreement shall

constitute a waiver of any prior, concurrent or subsequent breach of the

same or any other provision hereof, and no waiver shall be effective unless

made in writing and signed by an authorized representative of the waiving

party.

17) SEVERABILITY

If any provision of this License Agreement (or any other agreements

incorporated herein) shall be held by a court of competent jurisdiction to be

illegal, invalid or unenforceable, the remaining provisions shall remain in

full force and effect.

18) RELATIONSHIP

Neither this License Agreement, nor any terms and conditions contained

hereto, shall be construed as creating an employment, partnership, joint

venture or agency relationship or as granting a franchise, and the parties


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shall be deemed independent contractors. FIDO and COMPANY are not

guarantors of the fitness or quality of the licensed Products or Services.

19) SURVIVAL

The provisions of Sections 2(g), 7(b), 8, 9, 11, 12, 13 and 14 shall survive

expiration or termination of this License Agreement.

20) EXHIBITS

This License Agreement includes attached Exhibits A and B that are hereby

incorporated by reference.

IN WITNESS WHEREOF, the parties hereto have executed this License

Agreement as of the Effective Date and do each hereby warrant and represent that

their respective signatory whose signature appears below has been and is on the

date of this License Agreement duly authorized by all necessary and appropriate

corporate action to execute this License Agreement.


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COMPANY FIDO

___________________________ __________________________

Name (Signature) Name (Signature)

____________________________ ___________________________

Name (Print) Name (Print)

_____________________________ ____________________________

Date Date

Notice Information for COMPANY:

COMPANY: _______________________

Address: _______________________

_______________________

_______________________

Attention: _________________________

Telephone: _________________________

Fax: _________________________

Email: _________________________

With Notice Copies to (if desired):

COMPANY: _________________________

Address: _________________________

_________________________

Attention: _____________________________


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EXHIBIT A

Do not reproduce these examples. Upon execution of the Fido Alliance

Specification Trademark License Agreement and qualifying to use the appropriate

Marks, COMPANY will receive access to all of the electronic logo art files.

(a) Marks

Word Marks:

FIDO

FIDO Alliance

FIDO Authentication

FIDO Certified

Logos:

Current Logos:


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Deprecated Logos:


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Conditions on use:

The current logos are to be used with any new or updated uses of a FIDO

logo. The deprecated logos are to be used only with any existing uses of a FIDO

logo and to be replaced by current logos when the use is updated.

The FIDO Certified logo should be used ONLY with at least one of the

following snap-ons:

Functional Certification Snap-ons:

Functional Certification Snap-ons with Universal Server logo:


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Authenticator Certification Snap-ons:

Implementations may only use the Snap-on(s) for the implementations for

which they have been certified. Snap-ons can only be used with the FIDO

Certified logo or FIDO Certified Universal Server logo above to form a composite

Mark.

The Authenticator Certification Snap-on supersedes the Functional

Certification Snap-on for those implementations that are L1 or L2 Certified.


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Functional Certification Snap-ons and Authenticator Certification Snap-ons must

not be used together.

(b) Trademark Attribution Footnote:

The FIDO, FIDO ALLIANCE, FIDO AUTHENTICATION, and FIDO

CERTIFIED trademarks and logos are trademarks of FIDO Alliance.


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EXHIBIT B

FIDO ALLIANCE (FIDO) Usage Guidelines

The following guidelines govern the use of the Marks by COMPANY in

connection with licensed Products or Services. A copy of the Marks and the

appropriate variations of the Marks will be provided to your COMPANY upon

execution of the License Agreement.

A. The Marks may only be used to identify licensed Implementations

of COMPANY per the Fido Alliance Specification Trademark License

Agreement.

B. A Mark may not be used in a manner that would imply that

COMPANY is sponsored or endorsed by, or affiliated with, the members of

FIDO.

C. A Mark may not be used in a manner that would imply that goods

or services provided by COMPANY (other than the licensed

Implementation) are sponsored or endorsed by, or affiliated with, FIDO

itself or its members.

D. A Mark may be utilized in the provision of the licensed

Implementation (including on software screenshots), on packaging for the

related products and in marketing activities, including marketing

presentations, corporate marketing collateral, and corporate websites in

which the licensed Implementation is identified.

E. Electronic art of a Mark must be used as provided; changes in color,

design, or proportions are not allowed. Electronic art is provided for

reproduction purposes only. A Mark can be reproduced in black and white;

reverse; and/or full color. Finally, representations of the Marks shown

below are representative examples only and should not be reproduced.

F. A Mark may only be used as a complete word, and may never be

incorporated with other text as part of a word in any company name,

product name, service name, domain name, website title, or the like.


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G. A Mark may only be used according to the detailed guidelines set

forth in the then-current version FIDO Logos and I-Mark Usage Guidelines

Document published by FIDO Alliance, available on the FIDO Alliance

website at https://fidoalliance.org/about/logo-usage/, which is incorporated

by reference into this Exhibit B in its entirety. and which may be reasonably

amended by FIDO from time to time with reasonable notice.

https://fidoalliance.org/about/logo-usage/

FIDO ALLIANCE SPECIFICATION TRADEMARK LICENSE … · 2019-11-16 · FIDO Alliance Trademark License...

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